[E-trademarks] Applications owned by same owners no longer examined together?

Fri Feb 7 01:05:48 UTC 2025

TMEP §702.03(a)(i), which sets forth the practice that companion applications filed within three months will be assigned to the same examiner, is still in force and was unchanged by the November 2024 update.

I recently had a situation in which the practice was implemented correctly.  The client filed the first application in early June 2024 and three other applications in September 2024.  In late December, all four applications were assigned to the same examiner.

Perhaps the situations described below are the result of error, computer glitch, or other mix-up in which the USPTO failed to follow TMEP §702.03(a)(i), rather than a formal change in operating procedure.

Best regards,

Todd Owers
Carver, Darden, Koretzky, Tessier, Finn, Blossman & Areaux, LLC
1100 Poydras Street, Suite 3100
New Orleans, Louisiana 70163
(504) 585-3811
owers at carverdarden.com<mailto:owers at carverdarden.com>

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Jaclyn Ionin via E-trademarks
Sent: Thursday, February 6, 2025 4:52 PM
To: Carl Oppedahl <carl at oppedahl.com>
Cc: Jaclyn Ionin <jaclyn at ioninlaw.com>; For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Applications owned by same owners no longer examined together?

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OK - well glad it's not just me... but also.... wild... leave it to the USPTO to make a policy choice to actually STOP doing one of the few things that made sense and was a good practice

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On Thu, Feb 6, 2025 at 7:26 AM Carl Oppedahl <carl at oppedahl.com<mailto:carl at oppedahl.com>> wrote:

Yes we saw this just within the past two weeks.  We filed two cases on the same day for the same owner for the exact same identification of goods.  One is a plain-text mark and the other is a logo in which the most prominent element is, you guessed it, the identical plain-text mark.

And they got put onto the desk of two non-identical Examining Attorneys.  In two non-identical Law Offices.

And within the past two weeks each Examining Attorney mailed out a first Office Action.

If you were to put the two Office Actions side by side and work your way through them, you would be astonished.  I'll not go into details.  The sole identical element of the two Office Actions is that in neither case did a search of prior filings lead to any 2d refusal.  But there are instances of a refusal (on other non-2d grounds) in one case that did not get raised in the other.  And vice versa.  Barring some surprise, to secure approvals for pub there will be no choice but to accede to non-identical IDs in the two cases, for example.  If we were in class 25 (clothing) which we are not, it would have been a case of one of the EAs getting all wound up about what to do with the feather boas and the other EA getting all wound up about what to do with the smoking jackets, and arriving at non-identical proposals about new ID wording.

I would have thought that legacy practice (doing a cluster analysis on the corpus of not-yet-examined cases and assigning the cluster to a single Examining Attorney) had some common sense to it.  It could promote consistency among examined cases.  It could save internal resources within the Law Offices given that two related cases might not suck up twice as much time to examine as two unrelated cases.

But no, if you were to look at the two applications I am alluding to here (same filing date, same applicant, same goods, same text in the two drawings) then your reaction might well me that the USPTO's way of picking Examining Attorneys for the two applications could not be stupider even if one had set a goal of trying to be as stupid as possible.  Stupid in terms of consistency of examination, stupid in terms of managing the resources and productivity of the Law Offices.

Now let's assume for sake of discussion that there actually is some non-stupid reason why these cases got assigned to EAs the way they did.  I have to strain to come up with a guess as to a good reason, but maybe the big day arrived when some USPTO algorithm decided it was time to assign these cases to EAs.  And the algorithm happened to look at case A1 first, and and picked EA1 to assign it to.  And then ten minutes later the algorithm got around to looking at case A2.  And during the intervening ten minutes, two minor earthquakes within the USPTO had happened by coincidence within two minutes of each other.  A first minor earthquake was, EA1 got a notice that he or she was soon to be put on temporary detail in the Madrid Processing Unit.  And two minutes later, a second minor earthquake was that newly hired EA2 had just gotten placed into service and had an empty docket that needed to be filled urgently.  This is the kind of fact pattern that one must construct and imagine to make it non-stupid to assign the cases like this.

But even if you then stick your neck out and imagine that there have been dozens and dozens of earthquake coincidences that would explain dozens of such failure-to-cluster events, this still leaves more stupid to be explained.

Even if the two applications I am alluding to here (same filing date, same applicant, same goods, same text in the two drawings) somehow had a non-stupid reason for being assigned to non-identical EAs in non-identical Law Offices ...

why the heck would the USPTO not even bother to tell the two EAs that they have been assigned related cases?  Why did the USPTO pass up the opportunity to drop an email to each of the EAs letting them know that some other EA has a closely related case?  And then each EA could look in the computer and see stuff that might be helpful.  In my two cases, the Office Actions arrived a week apart.  The slower EA, when sitting down to examine the case, could have looked in the computer to see the contents of the Office Action that had already been mailed out by the faster EA.

Or even if we imagine the USPTO passing up the opportunity to drop an email to each of the EAs ... isn't there part of the ordinary examination process that ought to have prompted the slower EA to go look at the other nearly-identical case anyway?  Even in the absence of any prompting by some cluster analysis?  So for example when the time came for the slower EA to do a search of Office records, surely the other nearly-identical case would have jumped off the computer screen into the face of that slower EA.  And then the slower EA could at least get tipped off in the faster EA had identified some issue common to the two cases -- a surname issue or name-and-likeness-of-living-individual issue, or feather boa issue or smoking jacket issue.  But no, if you look at the two Office Actions, your strong reaction would be that it must be that neither of the EAs did anything at all to pay attention to the work of the other of the EAs.

On 2/6/2025 12:04 AM, Jaclyn Ionin via E-trademarks wrote:
Has the practice of all applications by a single applicant being pulled at once by examiners been discontinued?

I have several sets of applications not only owned by the same owners and filed simultaneously, but some of which are also straight translations of each other, yet they are being pulled for examination at different times by different examiners.

Anyone else encountered this recently?
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